Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

gTLD Launch: An Update on the TAS Interruption

By Jamison Arterton on Posted in Domain Name, gTLD Issue

Written by Jamison Arterton and Geri Haight

As previously posted, ICANN’s TLD application system (“TAS”) has been plagued by a “technical glitch ” that has caused the online application system for new generic top level domains (gTLDs) to be taken offline in order to protect the confidential information of the applicants.  Despite prior indications that the system would reopen in late April, the TAS system remains offline.

ICANN recently announced that it has now provided notification to all users as to whether their confidential information might have been impacted by the system error.  Such notifications were sent to the 1,275 registered TAS users in four categories: Continue Reading

gTLD Batching Update: Digital Archery Services Available at a Price

By Jamison Arterton on Posted in Domain Name, gTLD Issue, Trademark

Written by Jamison Arterton

As ICANN struggles to get its application system back online, companies have begun lining up to make a profit off of the peculiarities of the application process itself.  Pool.com, a domain name drop catch service provider, has recently announced a “Digital Archery Service” which, it claims, can help gTLD applicants get their applications into the top of the application queue (or into the first “batch” of applications to be processed by ICANN).

As previously posted, ICANN is planning to use a “batching process” to review gTLD applications.  While the time frame is somewhat fluid, the first batch of new gTLDs are slated to become active in early 2013.  Applicants in subsequent batches will be forced to wait until 2014 or later to see their gTLD go live.  Thus, getting into the first batch of 500 applications is expected to reduce the wait time for gTLD review, approval and launch by up to a year or more.

Not surprisingly, Pool’s services come at a price.  Pool charges $25,000 to get an application into the first batch.  The charge for getting an application into the top 50% of all batched applications is $10,000.  If Pool is unsuccessful in getting the application into the top 50% of all applications, there is no charge.

Given the extended time frame facing applicants in the second or third gTLD application batch, trademark holders may determine that securing a place in the first batch is worth the $25,000 price tag attached.

Nothing Revealed on “Reveal Day”: New gTLD Application System Remains Suspended

By Geri Haight on Posted in Domain Name, gTLD Issue

The much anticipated “Reveal Day” — so dubbed by ICANN itself — has now come and gone without fanfare.  May 1st was to be the day when ICANN was scheduled to publish the list of all applied-for new generic top level domains (gTLDs) as part of the roll-out of the new Internet era.  Instead, all that was revealed today was that ICANN remains mired in technical glitches.

Continue Reading

The Latest From ICANN: New gTLD Application System Shut Down

By Jamison Arterton on Posted in Domain Name, gTLD Issue, Trademark

Written by Jamison Arterton

ICANN has temporarily taken the TAS application system for new generic top level domains (gTLDs) offline due to a “technical glitch.”  According to ICANN, a technical problem allowed a limited number of users to view other users’ file names and user names.  To protect the applicants’ data, on April 12, 2012, ICANN took the application system offline until the problem is resolved.  Two weeks later, the TAS system still remains offline.  ICANN claims that it has narrowed the pool of affected applications and the associated posted documents and hopes to reopen the system on April 27, 2012. Continue Reading

Fourth Circuit Resurrects Rosetta Stone’s Challenge to Google’s AdWords Program

By Geri Haight on Posted in Dilution, Google Adwords, Litigation, Trademark Infringement

On Monday, the Court of Appeals for the Fourth Circuit reversed the district court’s decision ending Rosetta Stone’s trademark infringement case against Google.  Rosetta Stone’s complaint, filed in 2009, alleged that Google infringed Rosetta Stone’s trademark rights by selling its trademarks as keywords to third-party competitors without Rosetta Stone’s permission.  Under Google’s AdWords program, Google offers advertisers the ability to select certain keywords that will trigger a ”sponsored link” to the advertiser’s chosen website.  Google displays the “sponsored link” above or next to the organic search results.  The Rosetta Stone trademarks at issue, which Google included as keywords in its AdWords program, included “language library,”  “global traveller” and “Rosetta Stone,” among others.  Rosetta Stone alleged that Google’s sale of its trademarks to unrelated third parties for use in sponsored advertising caused consumers to follow the unaffiliated sponsored link advertisements based on the mistaken belief that the associated links/websites were owned by or affiliated with Rosetta Stone when, in fact, they are not.

In 2010, the district court ruled in Google’s favor,  concluding (among other things) that “no reasonable trier of fact could find that Google’s practice of auctioning Rosetta Stone’s trademarks as keyword triggers to third party advertisers creates a likelihood of confusion as to the source and origin of Rosetta Stone’s products[.]“  In the end, the district court gave Google a total victory, granting its motions for summary judgment on Rosetta Stone’s claims of (1) direct trademark infringement; (2) contributory infringement; (3) vicarious infringement; (4) trademark dilution; and (5) unjust enrichment (under Virginia law).  The Fourth Circuit reversed, at least in part, remanding the issues of direct infringement, contributory infringement, and trademark dilution to the district court.  In so doing, the Fourth Circuit set forth the details of some interesting bits of evidence for the district court to consider on remand.   Continue Reading

Viacom Lives to Fight Another Day in YouTube DMCA Suit

By Joseph DiCioccio on Posted in Copyright, Copyright Infringement, Digital Millenium Copyright Act, Litigation, Red Flag Knowledge, Safe Harbor, Willful Blindness

Written By Joseph M. DiCioccio

The Second Circuit has vacated District Court (S.D.N.Y.) Judge Louis L. Stanton’s June 2010 dismissal of Viacom’s $1 billion copyright infringement suit against YouTube.  In a thorough opinion, the Second Circuit remanded the case to the district court for further consideration of several key aspects of the case, including whether executives at YouTube had actual knowledge of specific infringing content sufficient to bar YouTube’s reliance on the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”).

The dispute stems from a copyright infringement complaint originally filed in 2007.  Viacom (and a variety of other plaintiff content owners) accused YouTube of directly and secondarily infringing copyrights relating to content posted on the site between YouTube’s inception in 2005 and 2007 when suit was filed.  After discovery, the parties cross-filed motions for summary judgment.  The court denied Viacom’s motion but granted YouTube’s, primarily relying on application of the DMCA’s safe harbor.  Viacom appealed.  The Second Circuit has now issued an opinion in which it clarified some key DMCA issues and remanded the case to the district court for further consideration. Continue Reading

The Batching Games: ICANN’s Plan to Process New gTLD Applications

By Jamison Arterton on Posted in Domain Name, gTLD Issue

Written by Jamison Arterton

On March 29, 2012, the user registration window closed for anyone planning to apply for a new generic top level domain (gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.  As of March 25th, ICANN had 839 registered users in the system.  Given the number of registered users, ICANN has announced that if it receives significantly more than 500 applications, it will begin processing those applications in batches.  Under this “batching process,” applications will be divided into groups of 500 applications to be evaluated at a time. Continue Reading

Pinterest Announces Changes To Its Terms Of Service

By Geri Haight on Posted in Copyright, Copyright Infringement, Pinterest

Pinterest, the latest social media craze, announced on Friday night in an email to users that it intended to make certain changes to its Terms Of Service.  The changes will not go into effect until April 6, 2012.  Pinterest has come under fire for allowing (or arguably encouraging) its users to infringe the copyrights of others by posting copyright protected content and/or images on their Pinterest boards without first obtaining permission from copyright owners to do so.  Indeed, Pinterest is all about allowing its users to generate Pinterest content by “shar[ing] beautiful things [users] find on the web.”  With over 10 million unique users and no signs that Pinterest is a passing phase, the copyright issues posed by Pinterest have come front and center.  So what was Pinterest to do? Continue Reading

Applying for a New gTLD? Registration Deadline of March 29, 2012 Approaches As Cybersquatting Continues To Rise.

By Geri Haight on Posted in Domain Name, gTLD Issue, Trademark Infringement, Uniform Domain Name Dispute Resolution Policy

Time is running out to apply for the Internet Corporation for Assigned Names and Numbers’ (ICANN) new program to dramatically expand the number of generic top-level domain names (gTLDs).  This controversial program has the potential to add countless new names to the currently available top-level domains (like .COM and .NET) by allowing companies to apply to serve as registries for a virtually unlimited list of new gTLDs.  If your company or client is considering applying for a new gTLD, the time to act is now.  Though the application period does not end until April 12, 2012, potential applicants must register with ICANN’s TLD Application System by Thursday, March 29, 2012.  Tens days left.  That doesn’t leave a lot of time to weigh the pros and cons of the new scheme…. 

 To read more background on the new gTLD launch, please click here and here.  Though ICANN has “reaffirmed” its commitment to open a second application period for new gTLDs, it has yet to announce when such a second window would be opened.   

Meanwhile, the number of cybersquatting/domain name disputes continues to rise.  The World Intellectual Property Organization (WIPO) announced that, in 2011, trademark holders filed a record 2,764 cybersquatting cases with the organization.  Will the launch of new gTLDs reverse this trend or simply provide new fertile ground for domain name disputes?  Only time will tell.

Letters of Protest: A Tool To Avoid The “Trademark Bully” Label

By Geri Haight on Posted in Letters of Protest, Section 2(d), Trademark, Trademark Bullying

Thanks to DuetsBlog for providing an update on the EAT MOR CHIKIN v. EAT MORE KALE dispute that was the subject of our prior post.  As we reported in December, the Trademark Office issued an office action on the pending trademark application for EAT MORE KALE for t-shirts, etc. and determined that “no similar registered or pending marks … would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02 [likelihood of confusion grounds].”  Shortly after issuance of this office action, as reported, an “Administrative Response” appeared in the prosecution file entitled “Letter of Protest Memorandum.”  The memorandum noted that the Office of the Deputy Commissioner for Trademark Examination Policy had granted a Letter of Protest filed by an undisclosed party and specifically directed the examiner to consider U.S. Reg. Nos. 2,062,809, 2,197,973, 2,538,050 – registrations for EAT MOR CHIKIN owned by Chik-fil-A.  The examiner must now make an “independent determination whether to issue a requirement or refusal based on the objections raised in the Letter of Protest.”  So, the Letter of Protest has the potential to bring the likelihood of confusion issue to a head before Chik-fil-A had to decide whether to initiate a formal opposition proceeding, which is helpful given the press attention that this particular dispute has received.

So what is a Letter of Protest (LOP) and how does it work?  Continue Reading